Marlinspike Hall LLC v. Bar Lab Concepts LLC

Background

Marlinspike Hall LLC operates a restaurant and bar named JOLENE at 54 Great Jones Street in Manhattan. It opened on May 18, 2021, and continuously used JOLENE for restaurant and bar services. Bar Lab Concepts LLC operates a cocktail bar and sound room named JOLENE SOUND ROOM at the Moxy Hotel at 353 Bedford Avenue in Brooklyn. Bar Lab Concepts described its venue as inspired by Dolly Parton and her song “Jolene.”

Marlinspike alleged that Bar Lab Concepts knew about Marlinspike’s earlier use of JOLENE. Marlinspike also stated that its principals and employees received numerous customer calls asking whether the two establishments were associated. Marlinspike filed claims under the Lanham Act, the federal trademark statute, and New York law, and sought damages and injunctive relief. The motion addressed in this opinion sought a preliminary injunction barring Bar Lab Concepts from using JOLENE or JOLENE SOUND ROOM.

Legal standard

To obtain a preliminary injunction, Marlinspike had to show irreparable harm, either a likelihood of success on the merits or serious questions favoring it together with a strongly favorable balance of hardships, and that an injunction would serve the public interest. For the trademark claim, Marlinspike had to show that JOLENE was a valid mark entitled to protection and that Bar Lab Concepts’ use was likely to cause confusion.

Protectability of JOLENE

Bar Lab Concepts argued that JOLENE was not protectable because it was a first name. The court rejected that argument at the preliminary-injunction stage. Although personal names are generally treated as descriptive marks that require proof of acquired meaning, the court found that Marlinspike had shown JOLENE signified more than just a first name. Both businesses used the name to evoke Dolly Parton and her song, and their marketing referred to that connection.

The court therefore found that Marlinspike was likely to succeed in showing that JOLENE was a suggestive mark. Suggestive marks indirectly suggest a product or service and are inherently distinctive, so they do not require proof of a separate acquired meaning. The court held that JOLENE was entitled to trademark protection without such proof.

Likelihood of confusion

The court then applied the eight-factor test used in the Second Circuit to assess likely consumer confusion. The similarity factor favored Marlinspike because JOLENE was the dominant and identical portion of both names, and Bar Lab Concepts often referred to its venue simply as “Jolene.” The proximity factor also favored Marlinspike because both businesses provided cocktail-lounge services, were located in New York City approximately 2.7 miles apart, and targeted similar nightlife audiences.

The strength-of-the-mark factor was marginal. The court found moderate inherent distinctiveness but relatively weak marketplace distinctiveness because Marlinspike offered limited evidence about advertising expenditures, consumer studies, sales success, and exclusive use. The actual-confusion factor was also marginal because Marlinspike’s statement about “countless” customer calls was not quantified or corroborated.

The gap-bridging factor favored Bar Lab Concepts because Marlinspike had not shown that it was likely to enter the sound-room or dance-club market. The good-faith factor modestly favored Bar Lab Concepts because evidence indicated that it had considered the name “Jolene” before Marlinspike began using the mark, which undercut an inference that it intended to exploit Marlinspike’s reputation. The quality factor favored Marlinspike because Bar Lab Concepts did not dispute that its services were equal or comparable in quality. The consumer-sophistication factor favored Bar Lab Concepts because the court viewed Marlinspike’s restaurant as high-end and concluded that its customers would exercise some care in choosing where to dine.

Considering all eight factors, the court concluded that Marlinspike had not shown a likelihood of success in establishing likely confusion. The court emphasized that Marlinspike had presented limited or no evidence on many of the factors, despite prevailing on protectability, similarity, and proximity.

Irreparable harm, equities, and public interest

Because Marlinspike had not shown likely success on the merits, it was not entitled to the statutory presumption of irreparable harm. The court also found that Marlinspike’s unquantified evidence of customer confusion did not sufficiently establish likely loss of control over its reputation or goodwill.

The court further held that the balance of the equities and the public interest weighed against preliminary relief. Although preventing public confusion generally serves the public interest, Marlinspike had not made a sufficient showing that confusion was likely.

Disposition

The court denied Marlinspike’s motion for a preliminary injunction and directed the clerk to close the motion at ECF No. 15.